Engineers Canada v. MMI-IPCO, LLC, 2015 FC 839 (Brown, J.)
July 7, 2015
Adele Finlayson and Amy Thomas of Macera & Jarzyna, LLP for the Applicant Engineers Canada
No one appearing for the Respondent MMI-IPCO, LLC
Justice Brown held that the appeal from a decision of the Trade-marks Opposition Board made under a power delegated by the Registrar of Trade-marks (“Registrar”) was moot.
Initially, the Registrar rejected the opposition filed by Engineers Canada/Ingénieurs Canada (“the Applicant”) to Application Serial No. 1,368,809 by MMI-IPCO, LLC (“the Respondent”) for the trade-mark POLARTEC ECO-ENGINEERING DESIGN. Following the Applicant’s appeal of the opposition decision, the Respondent withdrew its application for registration for the trade-mark and requested that the Applicant’s appeal be dismissed on the basis of mootness.
The Court was left to consider whether the appeal was moot and if so, whether the Court should exercise its discretion and hear the appeal notwithstanding its mootness. Justice Brown concurred with the reasoning in Dura Undercushions Ltd. v BASF Corp. (1998), 154 FTR 233 (“Dura”):
[19] Just as in the case at bar, there was an application for registration of a trade-mark, the trade-mark was advertised, and there was an opposition proceeding that resulted in a decision by the Board to reject the opposition. In Dura, as in the case at bar, there was an appeal under the TMA to this Court, followed by the Respondent’s abandonment of its application for a trade-mark. This Court found the appeal moot and declined to exercise its discretion to hear it.
Further, Justice Brown held that “there is no live controversy between the Applicant and the Respondent. There is no longer an application for the trade-mark that gave rise to this litigation. This is a classic case where the substratum of the litigation has disappeared.”
Accordingly, Justice Brown did not exercise his discretion and hear the appeal notwithstanding its mootness:
[39] The Court’s concern for judicial economy further militates against exercising discretion in this case. I have found this decision will have no practical effect on the parties. […] The interests of judicial economy lie against the Applicant.
[40] Finally, this case does not, in my respectful opinion, raise an issue of such public importance that its resolution is in the public interest. I respect that the Applicant represents the provincial and territorial professional associations of professional engineers, who in turn regulate the engineering profession. However, the trade-mark they opposed is withdrawn. This case, while important to the Applicant, has insufficient impact on the public at large to warrant hearing this appeal.
By: Katie L. Wei, Clancy P.C. + Brion Raffoul